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EPO Enlarged Board of Appeal to Decide on the patentability of computer simulations

Summary

The following questions are referred to the Enlarged Board of Appeal for decision:

In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

1. Introduction

The EPO case law on computer-implemented inventions has been quite stable for the last fifteen years. In particular, there has not been any decision of the Enlarged Board of Appeal (EBA) on this topic since G 3/08 of 12 May 2010.

Basically, a computer-implemented invention can be patented if it solves a technical problem by producing a technical effect. For the assessment of inventive step over the prior art only those features are taken into account, which contribute to the technical character of the invention.

There is, however, no general definition of what is “technical”.

The Technical Board of Appeal 3.5.07 (TBA) now has with decision of 22 February 2019 referred to the EBA the above three questions relating to the patentability of computer-implemented simulation methods. A decision by the EBA could have far-reaching consequences for applicants of computer-implemented inventions in Europe.

2. The invention

The invention disclosed in European patent application No. 03793825.5 and published as WO 2004/023347 A2 relates to a computer-implemented method of modelling the pedestrian crowd movement in an environment such as a train station.

The modelling can be used to help design or modify the venue (e.g. train station) and for that purpose achieve a more accurate and realistic simulation of pedestrian crowds in real-world situations. The application is based on the insight that human interaction can be expressed and modelled in the same way as interactions of physical objects as e.g. electrons in a semiconductor device.

Claim 1 of the patent application according to the main request of the applicant reads as follows:

simulating movement of a plurality of pedestrians through the environment, wherein simulating movement of each pedestrian comprises:

providing a provisional path (9) through a model of the environment from a current location (6) to an intended destination (7);

providing a profile for said pedestrian;

determining a preferred step (112′), to a preferred position (123′), towards said intended destination based upon said profile and said provisional path, wherein determining said preferred step comprises determining a dissatisfaction function expressing a cost of taking a step comprising a sum of an inconvenience function expressing a cost of deviating from a given direction and a frustration function expressing a cost of deviating from a given speed;

defining a neighbourhood (29) around said preferred position (123′);

identifying obstructions in said neighbourhood, said obstructions including other pedestrians (21) and fixed obstacles (25);

determining a personal space (24) around said pedestrian;

determining whether said preferred step (112′) is feasible by considering whether obstructions (21, 25) infringe said personal space over the course of the preferred step (112′).”

3. The Reasoning of the TBA

The TBA is of the view that the claimed invention lacks inventive step over a general purpose computer on the following grounds (section 11 of the decision):

“In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.”

In the proceedings before the TBA, the applicant has cited the earlier decision T 1227/05 relating to a computer-implemented method for the numerical simulation of an electronic circuit. T 1227/05 states: “An electronic circuit having input channels, noise input channels and output channels, the behavior of which is described by a system of differential equations is a sufficiently determined class of technical subjects, the simulation of which can be a functional technical feature.”

In other words, if the system or method to be simulated is sufficiently technical (expressed in engineering-heavy language ?), then the simulation method itself is also a technical method and for the assessment of inventive step has to be compared with prior art simulation methods, not with the functioning of a general purpose computer.

The TBA consequently held that if the board were “to follow decision T 1227/05, it would have to acknowledge that some or all of the steps of the simulation method of claim 1 contribute to a technical effect of the invention and could thus not be ignored when assessing inventive step” and that it “would hence be necessary to compare the invention with prior art other than a general-purpose computer.”

The TBA, however, still found that it “would tend to consider the subject matter of claim 1 of the main request to lack inventive step over a general-purpose computer” since the claimed method would “assist the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behavior of the virtual circuit or environment designed.” And, “the cognitive process of theoretically verifying its design appears to be fundamentally non- technical.”

4. The referral questions

The TBA therefore referred the case to the EBA for reconciling its own view (citing a number of other earlier decisions as support) with the inconsistent view of T 1227/05. The questions are:

In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

In effect, the question to decide here is if the required technical effect of a simulation method can be provided not only in the way the simulation program is running on the computer – then the relevant prior art is a general purpose computer – or if this technical effect can be provided also by technical properties of the simulated system (here: the design of the train station; in T 1227/05: the electronic circuit). If the design of a train station with staircases, exits, shops etc. is regarded in the same way as a technical subject matter as the design of an electronic circuit (which in my personal view should not be in doubt), then questions 1 and 2 have to be answered in the affirmative.

The outcome of the referral has in my view implications far beyond simulation programs, for example also to inventions based on machine learning (ML). If you replace in the referral questions “simulation” by “machine learning process”, the same issues arise.

There can be no doubt: If the first two questions of the referral are not answered in the affirmative by the EBA, applicants of various types of computer-implemented inventions in Europe will be in trouble.